Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Sunday, 31 October 2010

The AmeriKat adores the fall holidays. For those who know her Thanksgiving is by far the AmeriKat's favorite holiday, but running a close second is Halloween. Although she has begun noticing a growth in Halloween parties and events in the UK, no one does Halloween like the US. Costumes are plastered on our infants from the womb and grocery store aisles are devoted to crates of candy and ghoulish masks. Unlike the UK where one generally has to dress up 'scary' for the event, our costumes span the gambit of fancy dress; a mermaid, a flight attendant, a pumpkin are all acceptable attire. This Halloween, the AmeriKat had planned to go as a Savannahflappervampire (complete with accent and all) to one of her friend's Halloween parties and so she laid her head down to take a 15 minute power nap before the preparation would begin. However, when she later awoke it was 1 AM and her Halloween fun had sadly vanquished - a lesson that there is no such thing as a Kat nap. (picture, top left - look closely and you will see the AmeriKat asleep in her jack o'lantern)

Happy Halloween from the AmeriKat!

Court squeezes all the juice from the LimeWire: Something else that has been vanquished this week is LimeWire, the music file-sharing service that is a favorite of old and young alike. Last Tuesday Manhattan federal judge Kimba Wood ordered that LimeWire be permanently shut down by disabling the "searching, downloading, uploading, file trading and/or file distribution functionality" of their file-sharing software. This injunction follows a ruling six months ago that found the company and its founder, Mark Gorton, liable for copyright infringement on a "massive scale". LimeWire is still in the process of negotiating licence deals with major record labels to legally provide music for sale with a subscription service. Following the ruling Gorton issued a statement declaring that:

"While this is not our ideal path, we hope to work with the music industry in moving forward. We look forward to embracing necessary changes and collaborating with the entire music industry in the future."

Meanwhile the RIAA (Recording Industry Association of America) who handled the lawsuit issued the following following statement:

"For the better part of the last decade, LimeWire and Gorton have violated the law. The court has now signed an injunction that will start to unwind the massive piracy machine that LimeWire and Gorton used to enrich themselves immensely"

Now with the issues of liability and the injunction determined, the court will now be tasked with the quantification of damages early next year that the company and Gorton will have to pay. The LimeWire injunction came shortly after the former head of Warners Music in the UK, Rob Dickins, suggested that albums should go for as little as £1, which would enable the purchase to be an impulse purchase. Others, such as Paul Quirk the head of Entertainment Retailers Association, suggested that Dickins had already benefited from the heyday of $14 albums and was too casual with his statement (see this report in Ars Technica). From courtrooms to industry meetings, everyone is struggling to put a price on music. But is a music track worth a bottle of water, or a hardback novel? Regardless of the correct answer, the court's assessment of damages in the LimeWire case next year will be far greater than either of those values.

Hell's Angels take on Alexander McQueen: What does couture house Alexander McQueen and the Hells Angels Motorcycle Club have in common? Nothing, unless you count the recent lawsuit brought by the Hells Angels in California federal court Monday against Alexander McQueen Trading Company, owned by PPR, for use of their trade mark name and mascot winged death head symbol (picture, left). The famous motorcycle group has reportedly used their name and symbol since at least 1948 and are also proprietors of a USPTO registered trade marks in classes for jewellery and clothing. For those who are unfamiliar with the Hells Angels, the gang is comprised of motorcycle enthusiasts that are admitted once strict requirements are met. The FBI classifies the Hells Angels as one of the big four motorcycle gangs with links to violence and organized crime(although the group denies this). Not exactly a group of people that you would want to rip-off....

The complaint lists a $495 four finger duster ring called the "Hell's Knuckle Duster" which includes the protected winged death head design, a $2,329 clutch (picture, right) with a similar symbol, as well as a $1,595 dress and $560 silk scarf. These garments and accessories which include similar marks of the Hells Angels would, when worn, represent membership insignia and, according to the Hells Angels' attorney, Fritz Clapp ,"anyone wearing them would be considered an imposter by club members”. Eeeek! This invokes a somewhat funny image of a woman with an incredibly expensive designer handbag being chased by the Hells Angels for trade mark infringement.

This complaint against Alexander McQueen comes at the same time costume designer Jany Temime was accused of knocking off a McQueen dress in the upcoming Harry Potter film. Temime designed a wedding dress for the marriage of Bill Weasley and Fleur Delacour which incorporated a phoenix bird and feather motif, which is reminiscent of McQueen's peacock dress of A/W (Autumn/Winter) 2008. The dresses both include the heads of two birds at the bodice line with their body and feathers cascading down through the skirt. It seems incredible to the AmeriKat that a cosutme designer for a prominent film would skate so close to the edge of design protection. Some investigation by the AmeriKat has come up with a question that the dress was actually authorized by Alexander McQueen, but the official story has yet to be forthcoming.

USPTO and EPO unite to develop join patent classification system: Last Monday the USPTO announced that it will be working with the EPO to establish the formulation of a joint patent classification system. Because the USPTO pre-deates the International Patent Classification (IPC) system, the US system is not alligned with many other countries. The joint classification system will be more detailed than the current IPC system to improve patent searches, which will also aim to eliminate the duplication of work between the USPTO and EPO. David Kappos, Director of the USPTO, and Benoît Battistelli, head of the EPO, issued a joint statement stating that:

"In view of the significant benefit to stakeholders of developing a transparent and harmonized approach to global classification system for patent documents; in order to make the search process more effective; and in the belief that cooperation between the two offices will facilitate progress in undertaking classification harmonization projects under the IP5 Common Hybrid Classification initiative, the USPTO and the EPO have agreed together to work toward the formation of a partnership to explore the development of a joint classification system based on the European Classification system (ECLA) that will incorporate the best classification practices of the two offices. This system would be aligned with the WIPO classification on standards and IPC structure. Accordingly, they have initiated discussions on governance and operational aspects of such a partnership"

Earlier this month the USPTO launched its second pilot of their Peer to Patent system which commenced on 24 October 2010. With the stated goal of "enhancing government effectiveness through openness and collaboration", Peer to Patent is a system whereby the patent examination process is open to the public who can submit information, such as evidence of prior art to assist USPTO patent examiners during their examination. In the first Peer to Patent pilot over 600 items of prior art were submitted for 189 applications. The AmeriKat wonders if this could be a nice and easy way for current patent holders to 'pre-litigate' and knock patents of potential competitors out of the system. If so, is that a good or bad thing?

Saturday, 30 October 2010

The IPKat has been prompted by the EPLAW Patent Blog to read a recent EPO decision, who in turn have been prompted by none other than Stefan Steinbrener. This name will be familiar to all those who have been keeping a close watch on developments at the EPO leading up to the recent Enlarged Board decision of G 3/08 (commented on by Tufty here, among many others).

The decision, T 784/06 (currently available via the EPO register for application 95906094.8), relates to an application that was originally filed in 1994 for a method of automatic genotype detection. The method used probability distributions to determine a particular genotype at a locus within genetic material obtained from a biological sample. The actual invention, however, was really all about a mathematical method carried out on a computer, which allowed the probability distributions to be assessed and a result obtained. If this is all starting to resemble the invention in Vicom, you are already on the right lines.

(Right: the code in question. Can you make any sense of it?)

As a result of the mixture of 'technical' and 'non-technical' features in the claimed invention, the Board took into account the type of analysis normally carried out for computer-implemented inventions. The applicant argued that the mathematical parts of the claim contributed to the technical effect of the invention, and should therefore be taken into account when assessing inventive step. The opponent, however, argued that the mathematical parts "did not require any further technical considerations" and were to be disregarded in the assessment of inventive step.

The Board considered that the correct assessment to be made was that from decisions such as T 641/00 (Comvik) and T 154/04 (Duns Licensing), both of which related to computer-implemented inventions. The question to be answered was whether the claimed invention in the field of biotechnology having a mix of technical and non-technical features could be inventive. Non-technical features such as mental activities could be taken into account when assessing inventive step, provided they "interact with the technical subject matter of the claim for solving a technical problem and thereby contribute to the technical character of the claimed subject matter" (reasons, point 4). For assessing inventive step therefore, the question was whether the mental activity steps of the claimed invention interacted with the technical activity part to yield a tangible technical result. The applicant argued that they did, and the opponent that they did not.

All this was, as far as the IPKat was concerned, quite conventional and straightforward. The Board, however, then threw something of a googlie in deciding that the non-technical steps were only generally formulated and not well described in the specification. The specification did not provide a reasonably complete and sufficient description of the software, and this was not remedied by the mathematical formulae or the extract of code provided. As a result, no interaction could be established between the mental activity steps of the claims and the technical part, and these steps could be ignored when assessing inventive step. The claimed invention therefore lacked an inventive step, since the technical part was disclosed in documents cited during proceedings. The patent was revoked.

(Left: Or perhaps the real invention was just too simple?)

The IPKat thinks that this is decision is an important one, but perhaps not as important as it could have been. The Board's reasoning relating to the non-technical parts of the claims being insufficiently described seems to be a bit unusual, and tends to put the whole decision in a strange light. The IPKat suspects that the Board had decided that the claimed invention should not be allowed but were struggling to find sound reasons to reject it in light of the arguments presented. However, the decision highlights at least two important points. Firstly, that the case law relating to computer-implemented inventions can certainly be applied to the field of bioinformatics. Just because an invention is classified in the biotech field does not mean that the invention has to be assessed according to the case law relating only to that field. Secondly, if an invention is to rely on computer-based processing steps including mathematical methods then the disclosure needs to be as full as possible, and preferably described in a way that makes it understandable to someone outside the field of software coding. A few lines of impenetrable computer code and a couple of equations does not necessarily amount to a sufficient disclosure of the invention. The IPKat, who also could not make much sense of the invention as disclosed in the specification, wonders whether a different outcome could have been obtained if it had been more fully described or simply better explained.

Friday, 29 October 2010

The first civil senate of the German Bundesgerichtshof, which is, inter alia, responsible for competition law matters, decided yesterday in the "Hartplatzhelden.de" case (28 October 2010, case reference I ZR 60/09) that a football association has to accept it when video film clips of amateur football games held by its member clubs are made publicly accessible via the Internet. While the full decision has not been published, the court has issued a press release which is summarised below and which can be accessed by clicking here (in German). In case you wondered: Hartplatzhelden is German for hart court heroes...

On the its website "www.hartplatzhelden.de" the defendant operates an Internet portal that is financed by advertising. Users of the website can upload their on clips of amateur football games showing excerpts from such games that are up to 1 and 1.30 minutes long. Other Internet users can access and watch these videos free of charge. The claimant, the Württembergischer Fußballverband e.V. (the football association of Württemberg), which organises the football games, is of the view that it should have the exclusive commercial exploitation rights in relation to the games. As such, it asked the defendant to cease publication of the video clips and based its claim on 'misappropriation' ("unzulässige Leistungsübernahme"), anti-competitive obstruction and an unlawful interference with its right to an established and operative business ("Recht am eingerichteten und ausgeübten Gewerbebetrieb"). The Regional Court of Stuttgart (Landgericht Stuttgart) decided in favour of the claimant. On appeal, the Higher Regional Court (Oberlandesgericht Stuttgart) agreed but allowed a further appeal to the Bundesgerichtshof, Germany's highest court in civil matters.

The Bundesgerichtshof in turn denied an exclusive exploitation right of the football association of Württemberg and dismissed the claimant's case. The Bundesgerichtshof disagreed with the Higher Regional Court in some points and held that the publication of the video clips could not be considered as an unfair imitation of someone else's protected work (geschütztes Leistungsergebnis) in the sense of § 4 No. 9 letter b UWG (German Act of Unfair Competition). The court stressed that the claimant's work in the form of organising and executing football games also did not require this type of protection. The judges took the view that claimant could adequately ascertain its commercial exploitation of the football games held by its member clubs through prohibiting under its house rules (Hausrecht) that visitors make video recording of such games. Finally, the court also did not accept the claimant's further arguments concerning a exclusive exploitation right of sport associations.

The claimant, the Württembergischer Fußballverband e.V., has issued a press release on its website stating that it will wait for the full decision and the court's detailed reasoning before deciding how to proceed in the future as a "football family". Well, the association clearly appears to be a good sport about it... for now. Hartplatzhelden.de has also commented about the decision stating that they are "happy and relieved" and that it has been a tough game for them. This Kat can't help but whether the Württembergischer Fußballverband e.V. should perhaps just regard the short 1 minute fan videos as free advertisement for its games? Or is this a little naive of me? Thanks go to follow blogger Mark Schweizer... why do I think you may have a comment or two to make here....?

Thursday, 28 October 2010

An interesting decision on damages in cases of copyright infringing file-sharing has been handed down by the Regional Court Hamburg (LG Hamburg, decision of 8 October 2010, case reference 308 O 710/09).

In a press release the Hamburg court informs that it decided that a 16 year old file-sharer was only liable to pay damages of 15 Euros for each title he had illegally shared online. In this case the overall damages amounted to 30 Euros for two songs he had offered illegally on an Internet file sharing site. The claimant, who owned the distribution rights for these songs, had asked for damages of 300 Euros per title, which appears to be a fairly common amount usually awarded for such damages.

When deciding the amount of damages to be awarded - which had to be based on what a respective licence for these songs would have cost ("fiktiver Lizenzvertrag") - the court took into consideration that titles in question were songs of well-known artists (at least well known in Germany: the song "Engel" by Rammstein and the song "Dreh‘ dich nicht um“ by German singer song writer Westernhagen. However, the court also took into consideration that the songs were already several years old when they were offered online. As such, the court assumed that there was little demand for the songs. Furthermore, the court held that it was important that the songs had only been offered for a short time and the court hence assumed that each song had only been downloaded about one hundred times.

The Hamburg court further held that the father of the 16 year old was not liable for copyright infringement. While he had allowed his son to use the Internet access and was to regarded a "disturber" ("Störer") and had a duty of care ("Überwachungspflicht") concerning the Internet access that was used to commit the copyright infringing acts under the German principle of disturber liability. However, the father had not himself committed copyright infringement and as such was not liable for damages.

This Kat will certainly not go as far as to say that copyright infringement in German has just become a little bit cheaper, since every case very much will turn on its specific facts, but this decision by the Hamburg court nonetheless gives a good indication that the German courts appear to adopt a rather pragmatic real life approach when assessing the level of damages to be awarded.

It's time for this Kat's breakfast confession. When I munch down my cereal, I seldom look at the packaging of the box. In fact, more often than not, there is no box at all, as I partake in our home-made granola. But I made an exception for the packaging of the Kellogg's Corn Flakes box that I took delight in last week. In particular, I was drawn to the following text, which (together with some colorful visual elements that sadly I could not reproduce below) adorned the back of the box, as follows:

"Did you know?

We don't make cereals for anyone else!

Kellogg's has been making cereals for over 100 years. We're proud to say we still use only the highest quality ingredients in our unique recipes to bring only the very best cereals to your bowl.

In fact, we're so proud of our cereals we don't make them for ANYONE ELSE.

We believe only people who buy Kellogg's products should enjoy the unique and exceptional Kellogg's taste. For that reason ...

IF IT DOESN'T SAYS KELLOGG'S ON THE BOX ...

... IT ISN'T KELLOGG'S IN THE BOX!

There's a whole lot of sunshine in each and every bowl of Kellogg's Corn Flakes.

We use only corn that has been blessed with at least 120 days of sunshine.

Only then can we be sure that it's ready to harvest and ready to toast into those unmistakable crisp, golden flakes.

So let the sunshine in ....

...with Kellogg's Corn Flakes.

Kellogg's CORN FLAKES

The Sunshine Breakfast"

If you made it this far, then there are several points here that are particularly
notable.

1. First there is the text that appears at the top half portion of the page, which purports to remind customers that Kellogg's does not produce corn flakes for others on a contract manufacturing basis. This is an unusual form of corrective advertisement. Instead of an appeal to the public to refrain from using the mark at issue in a generic sense, such as XEROX or KLEENEX, here the correction is geared towards driving consumers to "corn flakes" product that bear the Kellogg's brand.

2. Apparently, the fear is that consumers attribute generic qualities not simply to the term "corn flakes", but to "Kellogg's corn flakes". This is so, even if no one claims that Kellogg's per se has become generic. This is further so, despite the use of several colors and distinctive graphic elements on the box, which one would have thought further distinguished their corn flakes product from those of other manufacturers.

3. However, the appeal to Kellogg's as the unique source of this particular corn flakes product is not enough. The lower half of the text seeks to attribute to it special attributes. As epitomized in the closing slogan to the display ("The sunshine product"), the message is that the Kellogg's product has passed a sort of solar endurance test--at least 120 days of sunshine. I spent several years in the U.S. cornbelt, and 120 days of sunshine (a full day; part of day?) is quite a feat.

4. Let's assume (and I have no reason to doubt the claim) that the Kellogg's Corn Flakes product in the box on my kitchen table indeed enjoyed at least 120 days of sunshine. Why should so much exposure to the sun be a product advantage? How do we know that the private label brand corn flakes sold on the adjacent shelf has not benefited from equal solar basking? Indeed, just for purposes of argument, what would happen if the private label brand begins to claim that its product has also been blessed with 120 days of sunshine?

5. Whatever one thinks of this back-of-box promotion, the two-prong attack of (i) corrective advertising to reinforce Kellogg's as the source of the product and (ii) the claim for special product attributes, mirrors the two basic phases of classical trade mark doctrine. First, as trade marks galloped through the 19th century, we had source theory. Maybe the source was known, maybe it was anonymous, but trade marks were synonymous with source identfication.

6. At a point in the 20th century, considerations of the mark as an indicator of quality began to seep into the accepted doctrine. Later, the quality aspect became a doctrinal torrent, such that trade marks began to perform two roles--source identifier and quality identifier. That is still the case today.

7. I suspect that the advertising/marketing folks who brought us this promotion were not consciously attempting to cover both of these alternative bases for the commercial role played by trade marks. The dual function is so engrained that it was natural for them to address both of them in seeking to distinguish the Kellogg's product against the increasing challenge of private label rivals, a competition exacerbated by the economic challenges of the past three years. It will be interesting to see the effectiveness of this campaign.

The IPEC -- or Intellectual Property Enforcement Coordinator -- is one of the most original and stimulating innovations on the United States IP enforcement scene. Functioning within the White House's Office of Management and Budget, the IPEC team runs an office which has the ear of the President himself. The first person to hold the position is Victoria Espinel, who was confirmed in her position by President Barack Obama nearly a year ago in December 2009. This is what she says about her role in helping tackle serious intellectual property infringement:

"My job is to help coordinate the work of the federal agencies that are involved with stopping this illegal behavior. We are going to work together to develop a strategy to reduce those risks to the public, the costs to our economy and to help protect the ingenuity and creativity of Americans. We want to be able to reduce the number of infringing goods in the United States and abroad. The examples are almost endless: counterfeit car parts, illegal software, pirated video games, knockoff consumer goods, dangerous counterfeit medicines, and many other types of products – including very sophisticated technology. Our goal is to better use taxpayer dollars and other government resources to be more effective in reducing any threat to our economy and our safety".

As readers probably now know, the IPKat is holding a seminar, "IP Enforcement in the UK: appraising the new American model", on Tuesday 23 November 2010, from 5.30pm to 7.30pm (doors open for registration at 5.00pm). The venue is the Central London office of leading law firm Covington & Burling. The office is at 265 Strand (details here).

The programme is now complete, and looks like this:

* The two principal speakers are Laurie Self (Covington & Burling) and Ashley Roughton (Hogarth Chambers). Laurie will explain the legal background and US experience relating to the IPEC, while Ashley will consider the extent to which the role of an IPEC might be transplanted or adapted to UK conditions.

* The subject will then be thrown open to the floor, so that those attending can ask questions and make comments;

* Following the serious part of the event, there will be some pleasant refreshments;

* IPKat team member Jeremy Phillips will be chairing the event.

CPD points have been applied for. Admission is free -- and you are all welcome. There are very few places remaining, but the IPKat will be opening a waiting list for those not lucky enough to have signed up early. If you're planning to come, please email IPKat team member Jeremy here(subject line "IPEC seminar").

Wednesday, 27 October 2010

Paul the pundit, prince of prediction. Paul the octopus, who made a name for himself during this year's football World Cup by correctly predicted the outcome of eight matches, passed away yesterday in an aquarium in Oberhausen, Germany. He was two and a half years old [says Merpel, that's about 87 in human years].

An English octopus hailing from Weymouth on the south-west coast, Paul's talents were unrecognised in the land of his birth. However, taking advantage of the European Court of Justice's Bosman ruling on freedom of labour within the European Community, he soon crossed the Channel to the Continent, where prospects for a predictive octopus are rosy. He settled into his new aquarium, out-musseled his rivals and was soon (s)quids-in.

Hmm, says the IPKat,
anyone can be an octopus if they really want ...

Paul's particular technique for calculating the outcome of a football fixture involved selecting a mussel from one of two boxes bearing the flags of competing teams. This is not unlike the method employed by English national team manager Fabio Capello, whose team selection involved picking, from a box of chocolates, confections marked with the names of squad members. Paul was however more successful, which is why he still had an interest in the tournament after Capello and the England team had crossed the Channel from the Continent, to a land where prospects for even failed footballers were rosy. Anyway, according to the BBC website,

"As the tournament progressed, the octopus's uncanny knack of selecting the correct box drew increasing interest from the world's media, culminating in his choice of Spain as the eventual winner.

He became an instant hero in Spain, prompting a request to have him put on display at Madrid zoo".

For the record, a documentary has been filmed, and books and toys are already planned for the Christmas market. A bachelor, he enjoyed the close company of his devoted keeper. A memorial is to be erected at the aquarium in his memory.

The IPKat's recommended reading:Report in The Guardian on Paul's death and the conspiracy theory
Spanish recipes for octopus here and [not for the squeamish] here
Paul the octopus in search of a trade mark in happier days: see Class 46 here, here and here

Dead King still enjoys royalty perks, but Schulz earns Peanuts. While it has been established since the days of Lewis Carroll (deceased) that a Kat may look at a king, it is plain that he is unlikely to earn as much. The BBC is among many media outlets that report the Forbes dead celebrity survey findings that the King of Pop (as Michael Jackson is apparently known) earned a whopping $275m (£173m) last year. This puts him ahead of any other celebrity, dead or alive, except Oprah Winfrey. Another moneyed monarch, His Majesty the King of Rock and Roll (a.k.a. Elvis Presley) crept in a distant second, making $60m (£38m), followed by a commoner, JRR Tolkien. In comparison, what Charles Schulz raked in might be described as Peanuts $33m (£21m), with Working Class Hero John Lennon trailing in fifth with a paltry $17m (£11m) [The celebrities listed here may be dead, but copyright isn't, notes Merpel: Jackson's album sales and radio airplay accounted for $50m, while sales of a video game, memorabilia and a re-released autobiography were worth another $50m].

Antonio, looking
very serious

Around the blogs. New PatLit team member Antonio Selas is now posting: you can see his first piece, on Veteri's patent infringement suit against Google, here. On the subject of PatLit, the third in its PPC Pages series ("The biter bitten") on the revamped Patents County Court (PCC) for England and Wales has now been published here (this episode deals with pitfalls at the pre-action stage and how to avoid, or sidestep, them) and a very helpful chart contrasting the PCC and Patents Court options appears here.

A little bit of Laetitia

Another new team member, this time for the MARQUES Class 46 weblog, is Laetitia Lagarde (Jacobacci), who will be monitoring General Court decisions on Community trade marks and applications for that busy blog. Laetitia, it should be known, has worked as an Examiner in OHIM's Trade Marks Department and as a Legal Assistant to the Boards of Appeal. She tells the IPKat that her old colleagues at Alicante will be curious to see where she has ended up ...

Brains = Money?
Wrong equation ...

Intelligence seeks vacant head. If you fancy a change of career (unless you're already doing this work, of course), the UK's Intellectual Property Office is looking for a Head of Intelligence Hub, Copyright & IP Enforcement Directorate. From the details here you will notice that all sorts of skills and talents are demanded of the lucky appointee, but the salary range, in keeping with current public sector austerity, is just £42,250 to £53,478. That's more than a Magic Circle trainee solicitor earns, but less than he or she would receive on qualification.

Recently published. Oh dear, October is ebbing away and the Kat plumb forgot to mention this month's Intellectual Property Magazine (here). This issue focuses on food and drink with reviews of (i) food 'n' drink brand extensions, (ii) protection of recipes, (iii) European GIs, (iv) brand bios of The Pure Package and Horlicks. Lots of pretty pictures, not too much to tax the reader's resources. Meanwhile, the IPKat has just received his November 2010 issue of the Journal of Intellectual Property Law & Practice (JIPLP): contents here, editorial ("IP and the moral maze") here; a reader's rejoinder here.

Editorial, advertorial? The UK Intellectual Property Office's IP Insight online newsletter carries a fair amount of content that is not created by the Office itself. For example, the current issue carries "Royalty Calculator" by Christi Mitchell of Highbury Ltd, "IP Enforcement in UK: Cheaper and Simpler New Procedure" from Marks & Clerk and "Have You Protected Your Brand Name?" by Amanda Jackson (Tigerfish PR). This has led to more than one reader of this weblog asking how he or she can get the answers to the following questions:

(i) does the IPO pay for its outside-generated content or, on the contrary, is it paid to carry it? (ii) is the facility for this wonderful opportunity for publicity open only to UK contributors and (iii) how can one apply or volunteer to have one's own editorial/advertorial content promoted in IP Insight?

The IPKat doesn't know the answer to any of these questions and hopes that one of his kind readers from the IPO -- or one of the contributors to IP Insight -- will come to his aid. Merpel says, IP Insight isn't very transparent: its home page carries no details of editorial policy and there's no obvious point of contact for would-be contributors. Merpel says, the IP Insight 'Fast Facts' balloon carries the following information: "IP Insight currently has a customer base of over 5,500 subscribers". This is the sort of data that is usually of more use to paying advertisers than to readers or to anyone who is not concerned with marketing and promotional prospects.

Tuesday, 26 October 2010

Neil Netanel's Copyright's Paradox was such a cool book title, and this was a book published by his very good friends at Oxford University Press, that the IPKat confidently expected to receive a complimentary copy, if not an actual review copy. That was back in 2008 and, while he has checked the mailbox from time to time for signs of inward-rushing paradoxes, the tempting tome still hasn't arrived. He was really looking forward to discovering what that paradox was all about. Surely it wasn't going to be something about copyright not being a right to copy ...

Anyway, the years have rolled by -- and two calendar years are equated with 24 cat years according to some knowledgeable folk -- and the Kat has had to resort to subterfuge in order to discover what the paradox is:

"Providing a vital economic incentive for much of society's music, art, and literature, copyright is widely considered "the engine of free expression"--but it is also used to stifle news reporting, political commentary, historical scholarship, and even artistic expression. In Copyright's Paradox, Neil Weinstock Netanel explores the tensions between copyright law and free speech, revealing the unacceptable burdens on expression that copyright can impose. Tracing the conflict across both traditional and digital media, Netanel examines the remix and copying culture at the heart of current controversies related to the Google Book Search litigation, YouTube and MySpace, hip-hop music, and digital sampling. The author juxtaposes the dramatic expansion of copyright holders' proprietary control against the individual's newly found ability to digitally cut, paste, edit, remix, and distribute sound recordings, movies, TV programs, graphics, and texts the world over. He tests whether, in light of these and other developments, copyright still serves as a vital engine of free expression and assesses how copyright does--and does not--burden free speech. Taking First Amendment values as his lodestar, Netanel offers a crucial, timely call to redefine the limits of copyright so it can most effectively promote robust debate and expressive diversity--and he presents a definitive blueprint for how this can be accomplished".

So now we know [Merpel's not convinced that this is really a paradox, any more than it's a paradox that the on-off button on his Katphone both turns the device on and off ...]. If you want to know more, you can still buy the book from OUP's website here. For bibliographic nerds who like to memorise ISBNs, here are a couple of crackers: 13:9780195137620 and 10:0195137620. The book is available in hard and soft formats, at the very reasonable price of $34.95.

The next paradox can be found in the title of Intellectual Property and Human Rights: a Paradox, edited by that distinguished gentleman Professor Willem Grosheide (Centre for Intellectual Property Law, Utrecht University, The Netherlands). His team has a 'something old, something new' flavour to it as old favourites like Rochelle Cooper Dreyfuss, Jan Brinkhof, Chuck McManis and Martin J. Adelman rub metaphorical shoulders with names with whom this Kat was hitherto unfamiliar such as Madeleine de Cock Buning (who tackles that fertile ground for paradoxes, convergence in copyright), the confidently assertive Joost Smiers ("Is copyright fit for the 21st century? No!") and Lucky Belder.

What then does publisher Edward Elgar have to say about this title? Tantalisingly, it omits any mention of the "p" word, leaving it for the sentient and attentive reader to decide for him/herself:

"In the modern era where the rise of the knowledge economy is accompanied, if not facilitated, by an ever-expanding use of intellectual property rights, this timely book provides a much needed explanation to the relationship between intellectual property law and human rights law.

The contributors promote the view that this relationship should be central to the analysis of many of the profound problems that nation states and the international community encounter today, be they scientific, technological or cultural. The book is divided into sections covering the law and its trends, IP rights as human rights and human rights as restrictions to IP rights.

This stimulating book will appeal to academics, postgraduate students, national and international public authorities and those involved with international organizations in the fields of intellectual property law and human rights law".

If you want to play "spot the paradox" you can order the book from Edward Elgar's website here. Helpful hint: the Kat's friends Charlotte Waelde and Abbe Brown actually say "paradox" in the title of their chapter. Further bibliographical data: the book is published this year, it's a hardback and it has ix + 317 pages. The ISBN is 978 1 84844 447 8 and, if you manage to buy it anywhere other than EE's website, it'll set you back £89.95 instead of the £80.96 which it costs with the publisher's discount. This book is also available as an ebook (ISBN 978 1 84980 204 8).

That's enough of paradoxes. Now for a paradigm: An Emerging Intellectual Property Paradigm: Perspectives from Canada, edited by another of the IPKat's friends, Professor Ysolde Gendreau (Université de Montréal, Canada). While this volume -- like Neil Netanel's -- was published in 2008, it must have taken a long time to reach the Kat. Paradigms are easier to comprehend than paradoxes, but sometimes less easy to recognise without someone else pointing them out to you [Merpel says this is because the existence of a paradox (like a parasol, parakeet or parachute) can be objectively verified while a paradigm (like a paragon) isn't identified as such until someone decrees it to be so]. Anyway, as the publishers say:

"In this book, reputed experts highlight the special features of Canadian intellectual property law. Situated at the crossroads [or dead-end, Merpel wonders] between legal traditions in Europe and the United States, Canada’s intellectual property laws blend various elements from these regions and offer innovative approaches. The chapters focus primarily on patents, trademarks, and copyright, covering both historical and contemporary developments. They are designed to bring perspective to and reflect upon what has become in recent years a very rich intellectual property environment.

Dealing with the characteristic features of Canadian intellectual property law, this book will be of great interest to scholars and researchers, and undergraduate, graduate and postgraduate students of comparative and international intellectual property law, as well as those concerned with industrial property law and copyright law".

Says the IPKat, whether it can be argued that Canada offers a paradigm for the dynamic fusion of legal cultures at a technological crisis point is a matter for debate. But there is no debate as to the general health of legal scholarship, certainly in the field of intellectual property, in Canada. Professor Gendreau and her cadre of contributors have established that beyond all reasonable doubt.

You can order this book, with the publisher's discount, here. That reduces your bill from £79.95 to £71.96. The book is xxv + 318 pages long, in both hardback (ISBN 978 1 84720 597 1) and ebook (ISBN 978 1 84844 502 4) formats. The cover, unfortunately, only comes in pink, but publishers Edward Elgar presumably know a thing or two about their target market and it just wouldn't do in blue ...

Monday, 25 October 2010

The previous post gave readers a sample of the entries received in the IPKat's Patent Limerick competition. Now for the winner ...

The number of entries received was very large. Getting on for a hundred submissions came in, from three continents and goodness-knows-how-many time zones. On reflection, the Kats should have spotted how easy it is to rhyme "Fred" with "bed", a factor that led to an easy descent to the sort of bawdy verse that the IPKat is (i) reluctant to confess to finding very funny when done well, but (ii) barred from posting on a weblog which, as is well known, is family reading material. Nonetheless, some limericks managed to slip through his filter and comply with most, if not all, of the rules for writing limericks. Some of the better ones are reproduced here.

A crafty inventor called Fred
Worked hard and went late to bed.
His invention brought him fame
But to standards he was lame
So his bank account's still in the red. (Jasper Groot Koerkamp)

A crafty inventor called Fred
Consistently fell out of bed
With attorneys and backers
And ended up crackers -
So now it's as well that he's dead.

A crafty inventor called Fred
Of whom people commonly said
"His ideas just won't fly"
Came along, passing by,
With a wave and a smile, overhead!

A crafty inventor called Fred
Tried his best to make silver from lead
With a downgraded stone
Which he happened to own
But he just got frustrated instead. (all three from Richard Gallafent)

A crafty inventor called Fred
Filed patent applications by the hundred
It was rather funny,
But none made him money,
So he became an attorney instead (Dr Michael Factor)

A crafty inventor called Fred
Is a cautionary tale, it is said.
He imbibed too much wine
Filed Form 2 not 9
And revoked his own patent instead. (Lucy Holloway)

A crafty inventor called Fred
dumped hardware for software instead
because it's easy, you know
with the USPTO
to get some maths trivia patented. (Gerry Gavigan)

A crafty inventor called Fred
Spent a long time in his shed
His clever idea
He sold to Ikea
Now his Kat is very well fed (Mary Smillie)

A crafty inventor called Fred
Held patents galore in his shed
'INJUNCTIONS!' - his goal,
But he got branded a troll,
So he licensed on FRAND terms instead. (Mark Daniels)

A crafty inventor called Fred
Built an aircraft entirely from lead
When they cried "Why Fred Why?"
"You know it won't fly!"
"Not obvious for patent" he said. (Chris Torrero)

In a field such as this, it was obvious that there would be problems in picking a winner, but in the end the Kat's preference went to a second entry by Lucy Holloway that reads thus:

A crafty inventor called Fred
Was sadly unable to wed.
Despite his Degrees
He spoke just ‘patentese’
And none could work out what he said.

For style, substance, insight into the real world of IP and sheer pathos, this was sheer poetry. Please get in touch, says the Kat, so that your complimentary registration to next month's Standards and Patents Conference can be sorted out.

To mark this year's Standards and Patents Conference, which takes place on 16 and 17 November (programme and booking details here), the IPKat organised a competition, for which the prize wascomplimentary registration, two networking lunches, four networking breaks and two cups of registration coffee. The competition rules were simple: entrants only had to compose a limerick that began with the words "A crafty inventor called Fred".

The winning entries will be posted later. This post contains a selection of entries which, the IPKat informs his readers, has been drawn from those talented, misunderstood, highly educated, sensitive and abused people who work as examiners for patent granting authorities. Like football referees, their job is necessary, difficult, demands acute powers of observation and is generally thankless. Success for a patent examiner, as for a football referee, comes when he can do his job without anyone noticing that he is even there. But enough of this, and the Kats reserve the right to have a go at patent examiners when the next opportunity arises.

These authors are anxious to conceal their identities since they fear reproach or reprisal from their employers yet, bravely and in some cases during office hours, they have risked all in order to provide some harmless enjoyment for the IPKat's readers. Just look at the quality of these ...

A crafty inventor called Fred
Was afraid to be found dead in his bed.
He devised an alarm
Which caused him much harm
And killed him at lunchtime instead.

A crafty inventor called Fred
Found a nice book which he read
On Heath-Robinson contraptions
And without any exceptions
He recreated them from A to Z [Note for American readers: "Z" has to be pronounced the English way, not as "Zee"].

A crafty inventor called Fred
Applied for an idea that he had
For perpetual motion
(whence got he that notion?);
This ended both quickly and sad.

Patent people being what they are, the IPKat was not surprised that, having received this,

A crafty inventor called Fred
Novel thoughts bearing fruit in his head
Knows it takes many years
To patent his ideas
So he keeps them a secret instead

he then received a request to file a divisional application for this ...

A crafty inventor called Fred

Novel thoughts bearing fruit in his head

Knows it takes many years

To patent his ideas

So he'll sell you a licence instead.

Thanks, fellas, say the Kats. We're so glad you took the trouble to brighten our day.

Antonio Campinos has now made his first speech to industry since taking over as President of the Office for Harmonisation in the Internal Market (OHIM). He spoke at Markenverband's annual forum in Munich (Markenverband is the body that represents top German brand owners). The full text of Antonio's speech can be read here.

Around the blogs. THE SPARKis a new British-based IP law blog. Claiming to be "novel, inventive and capable of distinguishing", this weblog promises "an independent and provocative view of recent developments in Intellectual Property law and litigation" and is written by "an English barrister with several years experience practising exclusively in Intellectual Property law". While the author goes to great lengths to conceal his identity, the IPKat is certain that he will discover the concealed identity soon enough. The clarity of expression, lack of obvious spelling and grammatical howlers and success in avoiding any use of lightbulb imagery have already helped him eliminate some 80% of possible contenders.

Is is my imagination, pondered
the Minister, or did I just hear
that chair speak ...?

Mother of Parliaments, home of talking furniture. On the subject of speeches,a chair -- John Whittingdale MP (Chair of the All Party Parliamentary Intellectual Property Group) tabled a Parliamentary Question to the Secretary of State for Business, Innovation and Skills (i) how often and for how long the website of the UK's Intellectual Property Office has been unresponsive as a result of denial of service attacks in the last three years; (ii) what reports he has received on the denial of service attacks on the Intellectual Property Office's website on 16 October 2010 (on which see IPKat here) and if he will make a statement, and (iii) what reports he has received on denial of service attacks undertaken on websites carried out under the banner of Operation Payback; and if he will make a statement. Replied Ed Vaizey MP (Minister for the Creative Industries):

"This Department was approached by one private sector company that was suffering a denial of service attack attributed to Operation Payback. Officials advised that company where to seek advice and to report the attack to the police. In the past week this Department has been working with the Intellectual Property Office (IPO) on the similar attack on their website. This is the first time in the last three years that the Intellectual Property Office website has been unresponsive as a result of denial of service attacks. The IPO have taken advice from experts within Government and [should 'and' read 'but', Merpel mischievously speculates] their service has now been restored. The Government clearly abhor this sort of direct action and the impact it has on businesses consumers and citizens who rely on access to Government websites for the delivery of important services; and call on those taking part to behave responsibly. The question as to whether this can be regarded as a criminal act is a matter for the appropriate authorities".

In an attempt to establish
a sense of identity, LES in
Scotland is introducing its
dress code.

The Licensing Executive Society Scotland is holding a meeting in Edinburgh this Thursday, 28 October. Enchantingly entitled "Win Win solutions- Learn how to optimise your odds in IP disputes", it stars John Sturrock (Founder and CEO, Core Solutions [says Merpel, Core Solutions must be the answer to Apple's problems ...]), Heriot Currie QC and the alliterative Lindesay Low (in-house counsel at the Scotch Whisky Association). The programme and registration details can be viewed here.

Recent publications. The November 2010 issue of Sweet & Maxwell's European Intellectual Property Review (EIPR) has now been published. This issue is rich in copyright, covering the failed orphan works provision in the UK's Digital Economy Bill (Dennis W. K. Khong), copyright law in the United Arab Emirates (Professor Brian Fitzgerald and Rami Olwan), copyright and competition law as viewed from the perspective of collecting societies (one of the IPKat's favourite topics, tackled here by Ingo Brinker and Tobias Holzmuller) and even a piece by Dinusha K. Mendis on copyright exceptions in the online world (we can't resist this subject: rationalising exceptions in this environment is a bit like the quest for the philosopher's stone ...)

As the IPKat mentioned in an earlier post, Benoît Battistelli (right), the new President of the European Patent Office, will be giving a public lecture at UCL on the 8th of November - his first in the UK since stepping into his new role. Full details, including a link to the tickets (which are disappearing fast) are below.

The title of his talk will be: How can Europe be a key player at a global level in the patent field? What is the role of the EPO?

The event includes a panel discussion with the speaker and:

John Alty,Chief Executive, IPO

Alasdair Poore, President, CIPA (tbc)

The chair will be taken by The Rt Hon Lord Justice Jacob

As for timing: it's 17:30 registration for an 18:00 start, with a drinks reception to follow the event.

Sunday, 24 October 2010

Two Fridays ago, the AmeriKat was involved in a technical discussion with a partner at her firm, when a bouquet of beautiful pink and purple flowers interrupted the dialogue as it landed on her desk. Convinced the bouquet was meant for someone else she looked at the card, but it was indeed addressed to her, an ipkitten, from an anonymous reader. The AmeriKat, unsure of what was more surprising, receiving flowers or receiving them from an anonymous source, began to quiz the usual suspects - all of whom knew nothing of the greenery. The flowers, still blooming away on her desk, are a little reminder to the AmeriKat that when you least expect it, your otherwise run-of-the-mill day can surprise you. (picture, left - the AmeriKat smelling her bouquet on her desk) Thank you, anonymous reader!

USPTO to stop trade mark bullies?: Recess - either the enjoyable half hour that many look forward to, or dread as the encounter with the playground bully nears. Teachers and students are not the only individuals concerned with bullies - surprisingly, the USPTO is as well! Earlier this year the US Congress and President Obama passed into law the Trademark Technical and Conforming Amendment Act of 2010 (TTCAA). The bill focused primarily on technical aspects of trade mark law such as affidavit filing for continued use of trade marks and other fascinating issues. However, there is a surprise in the Act. Every IP lawyer's favourite politician, Senator Patrick Leahy (D-Vermont, picture right), included a provision, now lovingly known as the "trade mark bullies" provision, that requires the Secretary of Commerce to study and report to Congress on:

"the extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner"

So where does Senator Leahy's concern about trade mark bullies derive? Well, it turns out it is good old fashion state politics. Senator Leahy is a senator from Vermont. His election to Senate, therefore, depends on the good people of Vermont. Some of these good people include a husband-and-wife run Vermont brewery, Rock Art Brewery, who had been on the receiving end of Hansen Natural Corporation's lawyers. Hansen produce a variety of beverages, including Monster Energy Drink. Rock Art Brewery produce a beer called VERMONSTER. Not infringing to the AmeriKat and little chance a consumer would be confused between buying a energy drink and a beer. However, Rock Art Brewery duly received a cease and desist letter from Hansen claiming that Rock Art's VERMONSTER infringed their MONSTER ENERGY trade marks. Instead of submitting to the multi-million dollar coroporation, the Vermont brewery fought back and generated enough negative publicity to lead to a settlement agreement whereby Rock Art Brewery could continue to use their mark. To hear Rock Art Brewery's story - click the links here and here.

The AmeriKat reads several reports of multi-million dollar corporations sending out such cease and desist letters (remember the DoughBoy/Girl saga here?) and with such commonplace stories the USPTO is now calling for submissions from small business owners about their experiences with such "bullies". Specific questions include:

In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner

Whether you think “trademark bullies” are currently a problem for trademark owners, and if so, how significant is the problem?

Whether you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?

Whether you think the USPTO has a responsibility to discourage or prevent trademark bullying? If yes, what should the USPTO do?

If you are the David in one of these David and Goliath sagas, the USPTO asks you to respond to questions and send your comments to TMFeedback@uspto.gov, with the subject line “Small Business Study” by no later than January 7, 2011.

The AmeriKat loves this provision and the call for evidence, but is questioning what Congress is really going to do with the evidence? What protection should be afforded small businesses? Perhaps an unjustified threats action? What do readers think?

Trade mark infringement makes Hulk mad: In the field of "surprising' (and potentially keeping with the trade mark bullies theme), nothing could be less surprising than a Disney-owned subsidiary, Marvel Comics, suing a much smaller company for use of one of their marks. Marvel Comics has filed a complaint against Airbase Industries, an Ohio-based power tool manufacturer, for use of a line of industrial and domestic equipment under a "Hulk" brand. The line's marketing logo is "Unleash the Power". One of Airbase's subsidiaries registered the HULK mark with the USPTO last year, which Marvel opposed, but an USPTO examiner gave the go ahead nevertheless. Now with the sale of Airbase's air compressor (picture, right) under the HULK mark, Marvel has initiated proceedings in the Ohio Southern District court.

The complaint states that the products slimy green shade is "confusingly similar" to the Hulk's green character. The lettering and font of the product's HULK mark is also, they allege, "nearly identical" to Marvel's Hulk logo. These two elements are so similar to the look and feel of Marvel's Hulk (picture, left) that your average power tool consumer will think that Marvel licensed the use of their Hulk rights to Airbase. Does your average power tool consumer think much except "that is an awesome air compressor!", anyway? Marvel is asking the court for the usual remedies - injunction, cancellation of the Airbase trade mark and all the profits from the infringing products.

Although several other companies and individuals have used and indeed registered HULK for products without too much of a squeak from Marvel, it is Airbase's product that has awoken the dragon. The AmeriKat believes this is due to the mistaken choice, by Airbase, to use such a similar green color to that of the Hulk. But the timing is also telling. Reported by The Hollywood Reporter last week, Marvel and American TV channel, ABC, are planning the return of the Incredible Hulk. Lesson: don't mess with the Hulk when he has a new show and merchandise coming out...

YouTube to face superstar lawyer in Viacom appeal: Another superstar that is planning a bit of an upcoming show is Theodore Olson. Olson, one of the most renowned appellate lawyers in the U.S. , has been hired by Viacom in their appeal against Judge Stanton's ruling earlier this summer. As reported by the AmeriKat (here), the judge ruled that YouTube qualified for the Safe Harbor protections under the Copyright Act for direct and contributory copyright infringement in hosting Viacom content illegally posted by other users. The loss was a huge knock to Viacom and other rights-holders in their fight against YouTube. The hiring of Olson, however, means that Viacom - far from being defeated, is coming back for another round.

Olson, (picture, right) a Republican, grew up mainly in the San Fransisco Bay area and later worked as the Assistant Attorney General in the Reagan Administration. He also defended former President Reagan during the Iran-Contra affair. From 2001 to 2004, Olson was, unsurprisingly, Solicitor General of the United States following his victory in Bush v Gore which permitted President Bush to take office. Obviously, the AmeriKat is painting a picture of Olson as a Republican ally, used to representing the more powerful and liquidated of parties. However, keeping in line with the theme of surprise this week, Olson also joined forces with his opposing counsel in Bush v Gore, David Boies, to bring and win a federal suit to overturn Prop 8 banning gay marriage in California in Perry v Schwarzenegger.

A few weeks ago, Google submitted a motion to the 2nd Circuit court to consolidate the appeals of Viacom and the class action suit headed by the Premier League. Had Google gotten their way, Viacom would have had to join forces with Premier League et al to file one appeal brief. However, last Monday the 2nd Circuit court ruled that although the case would be consolidated and heard in tandem per Viacom's motion, each of the parties would have the chance to file their own briefs. So as of 3 December, when Viacom is expected to file their appeal, the AmeriKat anticipates their brief, with Olson at the helm, will not fall too short of their 14,000 word limit. The oral hearings in the appeal are sent to take place next summer.

The AmeriKat wonders if Olson is keeping some surprising arguments up his sleeve for the appeal, because where she stands right now it will only be the most creative and impressive of arguments that will defeat YouTube,now.

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